Articles Posted inC.D. California

The plaintiff Alexsam, Inc. (“Alexsam”) filed an ex parte application to compel compliance with a subpoena to produce documents against a third party to the action, MasterCard. Alexsam had first served a Rule 45 subpoena on MasterCard several months earlier but had not received the documents it requested. Alexsam contended that it was being “stonewalled by delays in responding [by MasterCard] and then a last-minute demand that is unreasonable” after the close of fact discovery. As a result, Alexsam sought ex parte relief, arguing that it has acted diligently, but that MasterCard, while at first appearing cooperative, then refused to comply.

The district court began its analysis of the ex parte application by noting that ex parte applications are solely for extraordinary relief and should be used with discretion. See Local Rule 37-3 (to be heard on an ex parte basis, the moving party must show “irreparable injury or prejudice not attributable to the lack of diligence of the moving party”).

Plaintiff Genes Industry, Inc. (“Genes”) filed a patent infringement action against Defendant Custom Blinds and Components, Inc. (“Custom”). The patent discloses a winding wheel for use on window coverings. Custom filed a motion to continue its expert report deadlines from November 28, 2016 to February 10, 2017, and to continue the expert discovery cut-off date from December 16, 2016 to May 17, 2017.

In reviewing the request, the district court noted that “Defendant retained a new counsel way back in early November and the Court ordered the attorney substitution on November 17, 2016. This was 11 days before Defendant’s expert reports were due. Defendant’s counsel states that it took significant time to review the case after receiving the file on November 19, 2016. For some reason, Defendant’s counsel waited until just two days before Defendant’s expert reports were due before attempting to enter a stipulation with Plaintiff’s counsel to extend expert report deadlines. Plaintiff’s counsel declined this attempt because the Court’s previous order granting an extension of expert report deadlines had stated in capital letters that ‘no further continuances [would] be granted without a further very strong showing of good cause.'”Continue reading

Plaintiff Ecojet, Inc. (“Ecojet”) brought a patent infringement action against Defendant Luraco, Inc. (“Luraco”) for infringement of U.S. Patent No. RE45,844 (“the ‘844 Patent”). After the litigation was pending for several months, Luraco filed a Motion for Leave to File a First Amended Answer regarding venue.

In its motion, Luraco asserted that even though it “originally admitted that venue is proper in this district, it has since determined that venue is improper.” The district court explained that “Luraco’s argument seems to be tied to its request for re-examination of the ‘844 Patent, but the actual basis for venue being improper is unclear from its Motion.”Continue reading

The plaintiff, Shipping and Transit, LLC (“Plaintiff”), filed a patent infringement action against Defendant Neptune Cigars, Inc. (“Defendant”), for infringement of U.S. Patent Nos. 6,415,207 (“the ‘207 Patent”) and 6,763,299 (“the ‘299 Patent”). The Defendant filed a motion to dismiss on the ground that the patents are directed to ineligible subject matter under 35 U.S.C. § 101.

Instead of opposing the motion to dismiss on the merits, the Plaintiff issued a covenant not to sue to the defendant. The Plaintiff then argued that the covenant not to sue removed any actual controversy between the parties and that the case should be dismissed based on a lack of subject matter jurisdiction.Continue reading

Plaintiff Advanced Transit Dynamics, Inc. (“Plaintiff” or “ATD”) filed an ex parte application for a judgment of civil contempt against Defendant Ridge Corporation’s (“Defendant” or “Ridge”) for allegedly violating of the district court’s Modified Preliminary Injunction Order (“Order”). In its ex parte application, ATD asserted that Defendant’s repair and support of accused devices sold before the issuance of the Order constitute infringement and violate the Order.

As explained by the district court, before the effective date of the preliminary injunction, Ridge had sold hundreds of GreenTail devices. Ridge claimed that repairs and replacement parts are necessary to maintain the safe use of the devices. Ridge also asserted that it provides only unpatented parts and services and does not charge for them. On October 22, 2015, Ridge notified ATD that it interpreted the Order to permit Ridge to repair and support GreenTail devices sold before September 29, 2015. ATD disagreed with the interpretation and refused to consent to Ridge’s repair or support of the GreenTail devices.Continue reading

Limestone filed a patent infringement action against Apple, alleging direct and willful infringement of four patents. For each of the four claims of patent infringement against Apple, Limestone alleged, “[u]pon information and belief, Apple will continue its infringement notwithstanding its actual knowledge of the [four patents] and while lacking an objectively reasonable good faith basis to believe that its activities do not infringe any valid claim of the [four patents].” As such, Apple’s future “acts of infringement will constitute continuing willful infringement of the [four patents].”

Apple filed a motion to dismiss Limestone’s four willful infringement claims. Apple asserted that Limestone did not allege pre-litigation knowledge of the patents at issue nor did it move for a preliminary injunction. Apple argued that the willful infringement claims were deficient for these reasons.Continue reading

Plaintiffs filed an action defendants, Bouncing Angels, Inc. for, among other things, patent and copyright infringement. Plaintiffs successfully moved the district court to allow them to amend the complaint to add the owner of defendant Bouncing Angels, Inc., as a defendant based on financial evidence they discovered that could support an argument in favor of piercing the corporate veil. Discovery was extended “for the limited purpose of allowing discovery and dispositive motions only on issues relating to piercing the corporate veil.” The plaintiffs filed a motion to compel discovery on that issue.

As explained by the court, “[t]he discovery requests at issue in the Motion are all directed at defendant Bouncing Angels, and consist of document requests, requests for admissions, and an interrogatory. The discovery seeks Bouncing Angels’ tax returns and annual statements for a number of years, loan and security documents relating to a line of credit, information as to this defendant’s working capital, and whether Bouncing Angels ever conducted an independent audit.”Continue reading

After the court struck plaintiff’s damage expert’s report for failing to tie damages to the limited feature of the patented invention, the court permitted the plaintiff to submit a supplemental expert report. Once the supplemental expert report was served, AT&T again moved to exclude the plaintiff’s damage expert from the upcoming trial.

AT&T contended that the opinions in the Supplemental Report, organized around four alternative damages calculations presented in two sets of two, did not correct the defects in the original report because plaintiff’s expert (Parr) did not tie “his damages calculations to the value of the patented invention.” AT&T further argued that the calculations simply attempt to exclude certain non-infringing revenue from the royalty base and do not attempt to address apportionment at all, which runs afoul of the entire market value rule.Continue reading

After the plaintiff Cordelia Lighting, Inc. (“Cordelia”) obtained a preliminary injunction against Zhejiang Yankon Grp. (“Yankon”), Cordelia sought to add certain retailers to the injunction. Cordelia owns U.S. Patent No. 8,474,204 (“the ‘204 Patent”), which is entitled “Recessed LED Lighting Fixture” and describes a fixture designed to hold an LED light bulb. Cordelia alleged that Yankon infringed the ‘204 Patent by making and selling a product called the “Utilitec Pro LED Recessed Retrofit Downlight” Yankon sells these products to Lowe’s Companies, Inc. and Lowe’s Home Centers, LLC (“Lowe’s”).

In its effort to add Lowe’s to the injunction, Cordelia argued that Cordelia first argued that Lowe’s should be enjoined because it is in “active concert or participation” with Yankon. The district court explained that “[s]ignificant to the analysis here, ‘[a]ctions that aid and abet in violating the injunction must occur after the injunction is imposed for the purposes of Rule 65(d)(2)(C).’ Blockowicz v. Williams, 630 F.3d 563, 568 (7th Cir. 2010). It is undisputed that Yankon manufactures the Accused Products in China and then sells them to Lowe’s, freight on board, in China. (See Declaration of Stephen Lobbin, Doc. No. 107-1, Ex. E (Deposition of Kevin Zhao at 36:15¬37:2).) In other words, once Yankon sells a unit of product to Lowe’s, Yankon receives payment and no longer has any involvement with the end sales of the products to consumers. The Injunction Order prevents Yankon from making, selling, or importing the Accused Products. (Injunction Order at 14.) To be properly subject to the Injunction Order, Lowe’s would have to aid or abet, or be a privy to, Yankon taking such actions. But, Lowe’s fulfills neither requirement; it is hoping to sell off its own accumulated inventory of the Accused Products. Lowe’s has already purchased this inventory, and is not continuing to purchase Accused Products from Yankon (which would clearly constitute a violation of the Injunction Order).Continue reading

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